Order Regarding Joinder, Additional Discovery, and Observations on Cross-Examination IPR2014-00199

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Takeaway: The Board may grant a request to file a motion for additional discovery when the facts present more than a mere possibility that the requested discovery will uncover something useful, even if there is ongoing discovery into the same issue in a different proceeding.

In its Order, the Board addressed several issues:  (i) it denied Petitioner’s request to file a motion to join another inter partes review (IPR2014-00920) to the current proceedings; (ii) it granted Patent Owner’s request for authorization to file a motion for additional discovery regarding potential real-parties-in-interest; (iii) it provided guidance for Patent Owner’s anticipated motion to amend claims; (iv) it invited Patent Owner to seek authorization to file a motion for observations on cross-examination when that authorization would be timely; and (v) it reminded both parties of the rules governing motions to exclude.

First, the Board addressed petitioner’s request to file a motion for joinder.  The Board noted that Patent Owner opposed joinder on the grounds that the issues in the two IPRs are allegedly unrelated, so joinder would not result in efficiency gains for the Board or the parties.  The Board declined to authorize Petitioner to file a motion for joinder, but indicated that it would examine the joinder issue further in its consideration of IPR2014-00920.

Second, the Board turned to Patent Owner’s allegations that Petitioner is an indemnitor of two cell carriers, which Patent Owner alleged may be funding or controlling the instant IPR under the terms of the indemnification agreements.  Petitioner’s Counsel also indicated that it is currently representing those carriers.  Petitioner, however, objected that the parties were currently contesting the same discovery issue in a proceeding in district court.  Nevertheless, the Board permitted Patent Owner to file a motion for additional discovery, but cautioned that the authorization to file the motion did not mean the Board would grant it.  The Board specified that it will grant motions for additional discovery only if:  (1) the request is based on more than a mere possibility of finding something useful; (2) the request does not seek the litigation positions of the other party; (3) the information is not reasonably available through other means; (4) the request is easily understandable; and (5) the request is not overly burdensome to answer.

Third, the Board noted that Patent Owner had indicated its interest in filing a motion to amend claims at some point in the future.  The Board instructed Patent Owner that it did not need to obtain authorization to file a first motion to amend.  Patent Owner must, however, seek a telephone conference with the panel two weeks in advance of the proposed motion.

Fourth, the Board invited Patent Owner to seek authorization to file a motion for observations on cross-examination testimony of Petitioner’s reply witnesses, provided that Patent Owner must file that request at the appropriate point in the proceeding.

Finally, the Board reminded the parties that a motion to exclude evidence is available to a party wishing to dispute the admissibility of evidence and to preserve a previous objection.  Citing Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012), the Board reviewed the rules governing motions to exclude.  In particular, a party need not receive prior authorization from the Board to file a motion to exclude, but must identify the objections in the record and explain those objections.

Wavemarket, Inc. D/B/A Location Labs v. Locationet Systems, LTD, IPR2014-00199
Paper 28: Order on Conduct of the Proceeding

Dated: June 16, 2014
Patent 6,771,970
Before: Kristen L. Droesch, Glenn J. Perry, and Sheriden K. Snedden
Written by: Perry